DECISION

of the First Board of Appeal

of 11 January 2016

In Case R 1239/2015-1

Teleflex Incorporated
550 E. Swedesford Road, Suite 400 Wayne Pennsylvania 19087 United States of America	Applicant / Appellant

represented by MARKS & CLERK LLP, Fletcher House Heatley Road, The Oxford Science Park, Oxford OX4 4GE, United Kingdom

APPEAL relating to Community trade mark application No 13 191 416

The First Board of Appeal

composed of Th. M. Margellos as a single Member having regard to Article 135(2) and (5) CTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 21 August 2014, Teleflex Incorporated (‘the applicant’) sought to register the word mark

ULTRACATH

for the following goods:

Class 10 – Medical devices; surgical devices; medical and surgical devices, namely, catheters; parts and fitting for the aforesaid goods.

2. On 1 September 2014, the examiner provisionally refused the application on the grounds that the mark applied for did not appear to be eligible for registration under Article 7(1)(b) and (c) CTMR in conjunction with Article 7(2) CTMR.

3. The examiner referring to dictionary definitions of ‘ULTRA’ and ‘CATH’ and pointed out that the relevant professional public would understand the mark applied for as meaning ‘best catheters, top of the range catheters’. The examiner therefore considered that the mark applied for immediately informed consumers without further reflection that the goods in the application are the top ones, the best catheters. The examiner, therefore, also considered that the mark applied for fell within the scope of the prohibition in Article 7(1)(c) CTMR since the link between the mark and the goods was sufficiently close and the mark applied for conveyed direct and obvious information as to the kind and quality of those goods. The examiner added that ‘the impact of the mark on the relevant public’ would be descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. The mark was also objected to under Article 7(1)(b) CTMR.

4. On 30 October 2014, the applicant contested the examiner’s provisional refusal arguing as follows:

Article 7(1)(b) CTMR

• The relevant public will not make a direct and specific association between the mark ‘ULTRACATH’ and the goods. The mark applied for has no meaning in connection with the goods in question and does not describe a particular attribute or feature of the goods. The adjective ‘ULTRA’ is not used to describe or refer to a medical or surgical device or a catheter and is not used to promote the sale of medical devices or catheters. The meaning of the mark applied for is not immediately apparent and is not the ordinary way of referring to the goods.

• It is highly unlikely that the combination will be used to describe the goods objected to. The health professional would not refer to a medical device or catheter as ‘ULTRACATH’. The mark applied for has no usefulness to the relevant public in conveying obvious and direct information.

• ‘ULTRACATH’ is not a dictionary term. A mark that carries no dictionary meaning does not contain obvious and direct information on the kind of products in question. Where a mark such as ‘ULTRACATH’ does not exist as an English expression and is a made up term, it is unlikely that the relevant public will establish an immediate descriptive relationship between the mark and the goods without further reflection. Any potential meaning has to be extrapolated which means that it is at most allusive.

• Whilst the two marks which comprise the mark are generic terms which individually carry meanings, the combination is a made up term, which bestows on the mark distinctive character.

• The mark applied for could be interpreted in a number of ways. It is therefore not exclusively descriptive of the goods in the application.

• The Office has accepted other comparable marks containing the word ‘ULTRA’. The Office has also accepted the identical mark for catheters: CTM No 4 085 874 filed on 22 October 2004 and registered on 16 November 2005.

Article 7(1)(c) CTMR

• The examiner’s objection under Article 7(1)(b) CTMR is based on the finding of descriptiveness. Since the mark applied for is not descriptive it is distinctive. The mark applied for is uncharacteristic of the goods and the public will therefore remember and recall it. The combination is unusual and is a neologism.

5. On 22 December 2014, the examiner maintained her objections to the mark applied for pursuant to Article 7(1)(b), (c) and 7(2) CTMR. She argued as follows:

• In the provisional refusal of 1 September 2014 it was demonstrated that ‘ULTRACATH’ is meaningful by providing dictionary references, by examining the meaning of the expression having regard to the goods and the perception of the relevant public.

• Taken as a whole ‘ULTRACATH’ immediately informs health professionals without further reflection that the goods applied for are top of the range, the best catheters. The meaning is clear and unambiguous.

• That the mark must be considered as a whole is not incompatible with an examination of each of the marks individual components. The mark applied for does not produce an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed. ‘ULTRACATH’ is no more than the sum of its parts.

• It is irrelevant whether the characteristics described are commercially essential or merely ancillary.

• ‘ULTRACATH’ is made up of an entirely understandable combination of an abbreviation and a word, the message of which is immediate and obvious and not suggestive or allusive.

• There is nothing new or unusual in the mark applied for and it is a mere combination of the elements of which it is composed.

• It is settled case-law that where the Office may have registered comparable and even the identical trade mark, perhaps by error, this does not entitle the applicant to stake out a claim for a subsequent registration.

6. The examiner also accorded the applicant the opportunity to file evidence of acquired distinctiveness by 22 February 2015, failing of which the application would be rejected.

7. On 23 February 2015, the applicant requested an extension of the time-limit for filing evidence of acquired distinctiveness.

8. The applicant was given until 22 April 2015 to file evidence of acquired distinctiveness.

9. On 21 April 2015, the applicant replied stating that no evidence of use in the United Kingdom, Ireland and Malta could be found.

10. On 30 April 2015, the examiner issued a final decision (‘the contested decision’) in which she maintained the objections and refused the mark applied for in its entirety pursuant to Article 7(1)(b), (c) and 7(2) CTMR for the reasons given on 22 December 2014.

11. On 29 June 2015, the applicant filed an appeal against the contested decision, followed by the statement of grounds on 28 August 2015.

12. The appeal was forwarded to the examiner for consideration pursuant to Article 61 CTMR and the appeal was remitted to the Boards of Appeal on 2 September 2015.

Grounds of appeal

13. The applicant argues as follows:

Article 7(1)(c) CTMR

• The examiner did not correctly assess whether the mark applied for has a direct meaning in relation to the goods.

• The examiner placed too much weight on the dictionary definitions and did not consider Office guidelines on the use of websites.

• The examiner’s only evidence that the term ‘CATH’ is an abbreviation of ‘catheter’ is from the website at the domain name www.abbreviations.com. This is insufficient to suggest that that term is a recognised abbreviation for ‘catheter’.

• The examiner failed to consider that the combination is unusual and ambiguous due to the common meanings of ‘CATH’ being completely unrelated to the goods at issue.

• The English term ‘Cath’ is well known for being the abbreviated form of the woman’s name ‘Catherine’. It is also used to denote ‘cathedrals’ or ‘Catholicism’. The first 50 results of a Google search refer to people with the name ‘Cath’ or the CATH Protein Structure Classification database (see Annex 1);

• ‘CATH’ is not sufficiently known amongst the relevant pubic to mean ‘catheter’. Articles from the medical profession referring to catheters as ‘CATHs’ cannot be found. ‘CATH’ is not a commonly known abbreviation for catheters among health professionals. The mark is not ‘ULTRACATHETER’. The average consumer would need to expend additional thought to make any link between the mark and the goods. The mark applied for is, therefore, allusive.

• Any possible meanings of the conjoined term ‘ULTRACATH’ would be related to the woman’s name ‘CATH’, or the use of the abbreviation ‘CATH’ meaning Catholic or cathedral. When combined with ‘CATH’, an allusion to catheter would be more difficult to discover and the public would have to spend time deciphering the mark. Since the mark as a whole has a number of meanings and is easily remembered, it is distinctive.

• Although the mark could be considered as a conjoined word consisting of ‘ULTRA’ and ‘CATH’, the mark applied for as a whole creates an impression which is sufficiently far removed from that produced by the separate meanings of the elements that make up the mark. ‘ULTRACATH’ makes no sense; ‘CATH’ does not have a common meaning in relation to the goods. The mark as a whole would not bring to mind the goods.

• Where a mark has a multitude of possible meanings, the mark is not descriptive or non-distinctive where the most common meanings are still considered to be vague in relation to the goods.

• Reference is made to decision in case R 1625/2014-2 (30/03/2015, R 1625/2014-2, ULTRAHEALTH (fig.)) wherein the Second Board found that the public would not immediately and without further reflection make a definite and direct association between contact lenses and ‘ULTRAHEALTH’ and that ‘EUROHEALTH’ did not directly and immediately inform the consumer of the qualities and specific characteristics of contact lenses. Likewise, since ‘ULTRA’ does not on its own designate a quality or characteristic of catheters and ‘CATH’ does not have a direct meaning in relation to catheters, ‘ULTRACATH’ is not descriptive.

Article 7(1)(b) CTMR

• The examiner did not provide any reason as to why the mark is non-distinctive, other than it is so because it is descriptive.

• That a mark can have a number of meanings or constitute a play on words or be perceived as imaginative, surprizing and unexpected and, in that way be easily remembered, endows the mark with distinctive character.

• The fact that a mark is promotional or laudatory in nature does not mean that it cannot also be distinctive. The term ‘CATH’ is not a common abbreviation for the goods applied for and the prefix ‘ULTRA’ has no meaning in relation to goods where it is used in conjunction with a descriptive term. ‘ULTRACATH’ is not a laudatory term. The mark does not convey an immediate message about the goods since ‘CATH’ is ambiguous and the mark as a whole has no meaning. The mark applied for has the minimum degree of distinctiveness. At most the mark viewed immediately and without further reflection means ‘the best Cath’, which does not convey any logical, clear or intelligible meaning to the consumer. ‘ULTRACATH’ is unexpected since the term ‘CATH’ is commonly known to be a woman’s name, or an abbreviation for catholic or cathedral. The mark is evocative of some kind of superhero, which bears no relation to the goods at issue.

Reasons

14. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR, as amended. It is, therefore, admissible.

15. When the Office examines a trade mark application on absolute grounds, it must have regard to all the relevant facts and circumstances and it cannot carry out the examination in the abstract. It must have regard to the characteristics peculiar to the mark and, in the case of a word mark, its meaning, in order to ascertain whether or not any of the grounds for refusal set out in Article 7 CTMR apply. Since registration of a mark is always sought in respect of the goods or services covered for registration, the question of whether or not any of the grounds for refusal set out in Article 7 CTMR apply to the mark must be assessed specifically by reference to those goods or services (see, to that effect, inter alia, 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 31 to 35). Regard must be had to the relevant public’s perception of the mark.

16. The applicant in its observations appears to consider that the relevant public is the average consumer (see, for example, point 4, page 9 where the applicant states that ‘the average consumer is even less likely to make a connection between the mark and the goods’; ‘[T]he average consumer would need to expend additional thought to make any connection between the mark applied for and the goods’). The goods in the application are ‘medical devices; surgical devices; medical and surgical devices, namely, catheters; parts and fitting for the aforesaid goods’ in Class 10. As the examiner rightfully defined, the specification of the mark applied for includes medical devices, surgical devices, catheters and parts and fitting therefor. The relevant public clearly consists of health care professionals whose level of attention is high. The relevant public is the public in the United Kingdom, Ireland and Malta, since the two components of the mark applied have a meaning in English.

Article 7(1)(c) CTMR

17. Article 7(1)(c) CTMR provides that trade marks which ‘consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered.

18. The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage, from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought. Such signs or indications do not fulfil the original function of a mark, which is to identify the commercial origin of the goods or services. Therefore, such an assessment of whether a sign is descriptive can be made only, first, in relation to the goods or services concerned and, second, in relation to the understanding which a given target public has of them (23/11/2011, T-59/10, Amplidect, EU:T:2011:690, § 29).

19. For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immediately, without further thought, a description of the goods or services in question or one of their characteristics (see, to that effect, 20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

20. Therefore, the mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26; and 27/02/2002, T-34/00, Eurocool, EU:T:2002:41, § 38). It is not decisive if other meanings exist beside the one indicated (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30-32).

21. A mark consisting of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of the goods and services for the purposes of Article 7(1)(c) CTMR, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes either that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components. In the second case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purpose of the same provision (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 104).

22. The applicant does not dispute that the mark applied for is a combination of the terms ‘ULTRA’ and ‘CATH’. Nor does the applicant dispute that ‘ULTRA’ may, as the examiner stated, have the meaning of ‘beyond what is ordinary, proper or moderate’.

23. Indeed, moreover, the prefix ‘ULTRA’ is commonly employed in the English language for ‘signifying going beyond, surpassing, or transcending the limits of the specified concept’ (see http://www.oed.com). In that sense it is used as a prefix to another word to form a compound noun or a compound adjective (see the very numerous entries for the entry ‘ultra-, prefix’ in http://www.oed.com such as, for example, ultra-distance; ultra-runner; ultra-run; ultra-feminism; ultra-modern; ultra-remuneration; ultra-speed).

24. However, in this case, citing the decision of the Board in Case R 1625/2014-2 (30/03/2015, R 1625/2014-2, ULTRAHEALTH (fig.)) the applicant argues that the word ‘ULTRA’ is not capable of reinforcing the designation of a quality, since any common possible meaning of the conjoined sign ‘ULTRACATH’ would be related to the woman’s name ‘Cath’ or the abbreviation for Catholic or cathedral.

25. The Board, to the contrary, does not agree that in this case the relevant public would understand ‘CATH’ as either the abbreviation for the woman’s name ‘Catherine’, ‘catholic’ or ‘cathedral’. Nor would the relevant public assume that it refers to ‘CATH’: the Protein Structure Classification database. The mark applied for must be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned.

26. In everyday spoken or colloquial language it is not uncommon for words to be contracted or abbreviated. However, how the abbreviation ‘CATH’ is understood depends on the context in which it is encountered. Thus, it is possible that in the fashion and accessories business in which goods are often designated by a name, ‘CATH’ may be interpreted as meaning ‘Catherine’. In the religious context, ‘CATH’ may be interpreted as the abbreviation for ‘Catholic’ or ‘cathedral’. However, the goods at issue are not customarily marketed under a first name and do not have a religious significance.

27. Rather, since the goods in the specification are ‘medical devices; surgical devices; medical and surgical devices, namely, catheters; parts and fitting for the aforesaid goods’, for use by doctors, surgeons, and health care professionals, the most obvious and immediate meaning of ‘CATH’ will be as an abbreviation for ‘catheters’. In particular, the goods at issue are catheters, parts and fitting for catheters or medical or surgical devices that may be used in conjunction with catheters, which are primarily of interest to doctors and surgeons. The understanding of such a public when confronted with that sign on catheters, medical and surgical devices and parts and fitting therefor is that ‘CATH’ is a shorthand or abbreviation for catheters. A catheter is a medical device in the form of thin tube serving a broad range of functions in caring for patients. They are inserted into a body cavity, duct, or vessel and are used to treat diseases or perform a surgical procedure. By modifying the material or adjusting the way catheters are manufactured, it is possible to tailor catheters for cardiovascular, urological, gastrointestinal, neurovascular, and ophthalmic applications. Functionally, they allow drainage, administration of fluids or gases, access by surgical instruments, and also perform a wide variety of other tasks depending on the type of catheter (see the extract for ‘catheter’ in Wikipedia which the examiner cited in the provisional refusal of 1 September 2014). Thus, in the medical field catheters are common medical devices for performing a variety of procedures. Thus, the examiner rightly referred to the entry at the domain name www.abbreviations.com, specifying ‘cath’ as the recognised abbreviation for ‘catheter’ in medicine.

28. The Board, therefore, rejects the argument that ‘CATH’ will be interpreted as meaning ‘Catherine’, ‘cathedral’ or ‘Catholic’. The mark applied for cannot, therefore, be found to be allusive of the goods in the application.

29. The relationship between the mark applied for and the goods in the application is, therefore, sufficiently direct and close. The relevant public will have no difficulty in comprehending that the mark applied for designates the kind or quality of the goods, namely, catheters that surpass in function or quality all other catheters, or parts and fitting for such catheters.

30. Accordingly, the Board considers the combination ‘ULTRACATH’ designates the quality and kind of goods that are covered by the specification for the mark applied for, namely, catheters that surpass in function or quality all other catheters.

31. The present case can be distinguished from Case R 1625/2014-2 (30/03/2015, R 1625/2014-2, ULTRAHEALTH (fig.)) concerning ‘contact lenses’. Whilst in that case the Board found that ‘HEALTH’ did not describe the shape, hardness, nature, texture or any optical property of contact lenses, the Board in this case considers that the attentive health professional would clearly understand that ‘CATH’ designates the nature and intended purpose of the goods at issue, namely ‘catheters’, parts and fitting for catheters, or medical or surgical devices for use with catheters.

32. The mark applied for consists of two elements, both of which are descriptive of the goods in respect of which registration is sought. The combination is also descriptive of the characteristics of those goods, namely that they are goods that surpass in function or quality other catheters or devices or parts used in conjunction with such catheters. The combination in relation to catheters does not create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed.

33. The examiner was therefore right to reject the mark applied for as descriptive pursuant to Article 7(1)(c) CTMR for the goods covered.

Article 7(1)(b) CTMR

34. Article 7(1)(b) CTMR precludes the registration of trade marks which are devoid of distinctive character.

35. Distinctive character within the meaning of that article means that the mark applied-for must serve to identify the goods or services in respect of which registration is applied-for as originating from a particular undertaking, and thus distinguishing the goods or services from those of other undertakings (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33 and 07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 29).

36. The distinctiveness has to be assessed by reference to the relevant public to which the claimed goods are directed (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 43), which it has been stated above is the public whose level of attentiveness is higher than average.

37. Moreover, it is established case-law that the fact that the relevant public is a professional one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of that public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

38. The notion of general interest underlying Article 7(1)(b) CTMR is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the product or service from others which have another origin (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 56 and 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).

39. The marks referred to in Article 7(1)(b) CTMR are, in particular, those which do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26).

40. There is nothing vague or unusual about the mark applied for in relation to the contested goods. The mark applied for is clearly banal for ‘catheters’, or medical or surgical devices, and related parts and fitting, which may be used for a variety of medical or surgical purposes. The mark applied for is a plain and simple laudatory sign that extols the exceptional capabilities of the applicant’s goods.

41. The semantic content of the mark ‘ULTRACATH’ thus indicates to the relevant public a positive characteristic of those products, relating to their market value, inasmuch as the ability to exceed in performance other medical and surgical devices is an important function which the relevant public seeks when it uses the goods. The mark applied for is clearly banal in relation to the goods in the application.

42. There is a clear link between the subject matter of those goods and the meaning of the combination of the words in the mark applied for. Even without the absence of a space the public, will have no difficulty in understanding that the mark applied for is composed of the words ‘ULTRA’ and the abbreviation or contract ‘CATH’ for ‘catheters’, and the combination is merely a shorthand expression for ultra-catheters, namely catheters, which surpass in performance other catheters. The goods in the application are catheters, parts and fitting for catheters, or medical or surgical devices that may be used in conjunction with catheters. The attentive professional public will accordingly perceive the mark applied for as the designation of the capabilities of those goods. There is no element which would allow the view to be reached that the mark applied for is unusual or might have its own meaning which, in the perception of the relevant public, distinguishes the goods offered by the applicant from those of a different commercial origin.

43. In everyday English it is common for words to be contracted or abbreviated; the meaning of the abbreviation that is taken will depend on the context in which the public encounters the abbreviation. The prefix ‘ULTRA’ is also commonly found in very many compound words in the English language. The meaning of the mark is self-explanatory in relation to the goods in the application. The word combination lacks any original sequence or structure. The word component has a plain meaning and is not an arbitrary or fanciful expression in relation to the contested goods. The mark applied for would not trigger, in the minds of the relevant public, a cognitive process or require an interpretative effort on their part to constitute anything more than a mere indication of the basic properties of the goods in question. The relevant public will not tend to perceive in the sign any particular indication of commercial origin.

44. Consequently, faced with the mark ‘ULTRACATH’ in relation to ‘medical devices; surgical devices; medical and surgical devices, namely, catheters; parts and fitting for the aforesaid goods’ the relevant public will immediately perceive it as laudatory information that the goods in question surpass in performance other catheters, rather than as an indication of their commercial origin.

45. The examiner, therefore, rightly refused the application in its entirety pursuant to Article 7(1)(b) and (c) CTMR.

46. Accordingly, the appeal is dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed Th. M. Margellos

Registrar: Signed H.Dijkema